Appeal No. 2002-0902
Application No. 09/231,672
The examiner admits that Laapotti does not disclose the use
of at least two double-felted presses arranged in series as
recited in appealed claims 1 and 11. (Answer, page 2.)
Nevertheless, the examiner argues that a water-absorbing
transfer band loop 60a corresponds to a “felt.” (Id.)
We disagree with the examiner’s analysis. While the
specification does not define the term “felt” or “felted,”
McGraw-Hill Dictionary of Scientific and Technical Terms 740 (5th
ed., edited by Sybil P. Parker, 1993)(copy attached) includes
“[a] compressed, densely matted unwoven fabric of wool,
sometimes with rayon or hair” as a definition for the term. It
is clear, therefore, that the examiner erred by asserting that a
water absorbing material is necessarily a felt material. In the
present case, the examiner has not adequately explained why one
of ordinary skill in the art would have been led solely from the
teachings of the prior art to select felt, out of a potentially
infinite genus of materials, as the material for the transfer
band loop 60a. In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941,
1943 (Fed. Cir. 1992).
For these reasons and those set forth in the appellant’s
briefs, we hold that the examiner has not established a prima
facie case of obviousness against the appealed claims within the
meaning of 35 U.S.C. § 103(a).
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